'First To File' U.S. Patent System Goes Into Effect This Month

This month marks a change in the U.S. patent system in which the first inventor to file a patent application gets precedence in the granting of patent rights.

March 16 was the first day for new rules under the America Invents Act (AIA), as implemented by the U.S. Patent and Trademark Office (USPTO). One of the big changes specified in that Act was the country's switch to a new "first to file" system. Under this system, the first "original inventor" that files with the USPTO potentially gets awarded patent rights.

The old system was called "first to invent," and it allowed the patent office to consider cases where inventors may have simultaneously developed the art independently of one another. However, the United States was alone in the world with that approach.

"Prior to the passage of the AIA, the USPTO was the only national patent office using a 'first-to-invent' system," the USPTO indicated, in an announcement.

The new policy supposedly harmonizes the U.S. patent system with the rest of the world, and it's possible that U.S. patent applications could be processed faster (it can take 34 months, on average, for the USPTO to process an application). However, the new process isn't without potential drawbacks and it's not clear that the USPTO is better funded to handle the backlog of patent applications. Moreover, large companies may be favored over other inventors under the new rules.

Congress passed the AIA, and President Obama signed it into law on Sept. 16, 2011. In a statement at the time, the Obama administration promised that the law would result in a shortened patent application processing time to as little as 12 months, reduce the backlog of about 700,000 applications and decrease litigation.

Microsoft Favors AIA
Microsoft was one of the companies that advocated for the AIA. Other corporations worked to influence the legislation under various pressure groups, such as the Innovation Alliance (including Digimarc, LSI, Qualcomm and others) and the Coalition for Patent Fairness (including Adobe, Apple, Cisco, Dell, Google, Intel and others). An organization representing small inventors, the Professional Inventors Alliance, opposed AIA because it could benefit foreign countries or large companies over smaller U.S. inventors.

Even though U.S. patent law has been changed, Microsoft is still advocating for changes. Brad Smith, general counsel and executive vice president for legal and corporate affairs at Microsoft, has suggested that losing patent litigants should pay in order to ward off frivolous lawsuits. He also called for reform on legal matters concerning standards-essential patents and promised that Microsoft will be more transparent about disclosing the patents it holds.

"We pledge that by April 1 of this year, we will publish on the web information that enables anyone to determine which patents we own," Smith wrote, in a February blog post.

Other Efforts
The USPTO has its own initiatives aiming to improve the patent process. In January, the USPTO launched a Cooperative Patent Classification system in conjunction with the European Patent Office. The aim of the collaboration is to bring together the best classification practices of both offices.

Patent harmonization is also on tap at European Union (EU) countries. In December, the European Parliament approved a new "unitary patent approach" to extend a common legal process across EU member countries.

Those readers interested in the issues and ambiguities associated with the first-to-file policy and the AIA can find lots to ponder in this Q&A with Carlos A. Fisher. He is a patent, trademark and copyright attorney with Stout, Uxa, Buyan & Mullins in Irvine, Calif. The interview, representing his personal views, was conducted in September 2011.

Currently, much of the current patent litigation in the United States is being carried out under the old rules, and not the new ones specified by AIA.

About the Author

Kurt Mackie is senior news producer for 1105 Media's Converge360 group.


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